Since I published that post, I have received numerous requests to provide information on procedures Rights Holders can take to directly enforce their rights online in several other foreign markets. To meet this demand, I have decided to ambitiously attempt to provide a multi-volume posting on the availability of notice and takedown procures in all countries throughout the world, starting with this post on notice and takedown procedures in South and East Asia.

However, before I delve into each country’s online copyright enforcement procedures, Rights Holders need to first evaluate a few issues before utilizing online copyright enforcement measures abroad.

1. Is the Work Entitled to Foreign Protection? A Rights Holder should not consider utilizing online takedown procedures in a foreign country without first establishing that their work qualifies for copyright protection in that foreign country. Often, this depends on whether their work qualifies for protection under: (1) the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) or other bilateral or multilateral treaties; and (2) the national copyright laws of the foreign country in question.

Berne Convention/Treaties. To qualify for protection under the Berne Convention, a Rights Holder’s work must become what is known as “attached.” Attachment requires that either:

the author of the work be a national of a Berne Convention member state (A list of Berne Convention member states is available here);

the author is a habitual resident of a Berne Convention member state;

the work is first published (made available to the public) in a Berne Convention member state; or

the work is published in a Berne Convention member state within thirty (30) days after an initial publishing in a non-Berne Convention member state.

If a work does not qualify for protection under the Berne Convention, it may qualify for copyright protection in a foreign country under a bilateral or multilateral treaty between the author’s home country and the foreign country in question. If the non-Berne Convention country is a member of the World Trade Organization (WTO) and has ratified the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the work may qualify for Berne Convention-like protection in other WTO member states.

Additionally, a work may qualify for protection in a foreign country based on a bilateral or multilateral agreement. A database of IP-related treaties can be found here.

National Copyright Protection Requirements. If a work qualifies for protection under the Berne Convention, TRIPS, or another bilateral or multilateral treaty, it must then qualify for protection under the copyright laws of whatever foreign country the Rights Holder wishes to enforce their rights. Many countries have similar copyright protection requirements, yet they do differ. For example a copyright protected work in the U.S. is an “original work of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). Conversely, a copyright protected work in Japan is “a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain.” Copyright Act. No. 48, Art. 2. Although these requirements end up covering much of the same types of works, there may be divergences depending on the type of work in question. A Rights Holder should consider consulting with qualified attorney in the country they wish to enforce their rights if they are unsure whether their work qualifies for local copyright protection.

2. Where is the Website’s ISP Subject to Jurisdiction? In order to effectively submit a takedown notice against an infringing website, the infringing website’s Internet service provider (ISP) must be subject to a country that has notice and takedown laws. This requires evaluating whether a notice and takedown country has personal jurisdiction over the ISP in question. Generally, a website’s ISP is only subject to the laws of a country where it is physically located or countries where it is engaged in enough commercial activity to establish personal jurisdiction. Determining an infringing website’s ISP’s location may be completed through conducting a WHOIS database search. However, such a search is a not guarantee that a website ISP’s will be accurately located.

Further, determining whether a website’s ISP is subject to a foreign country’s jurisdiction is a complex legal evaluation that differs from country to country based on each country’s own personal jurisdiction requirements. Again, a Rights Holder should consider consulting with qualified counsel in the country where they wish to submit a takedown notice to determine whether the ISP in question is subject to that country’s jurisdiction.

3. What is the Country’s National Online Copyright Enforcement System? If a work qualifies for copyright protection in a foreign country where an infringing website’s ISP is subject to personal jurisdiction, a Rights Holder then needs to establish whether that country has a notice and takedown system, and if available, such country’s specific takedown procedures.

Below is a brief overview of each South and East Asian country’s copyright enforcement system. However, there are few things to first consider:

Enforcement System Legend: Countries that maintain legal protocols for Rights Holders to directly petition ISPs to remove infringing content are identified below as a “Notice and Takedown Systems.” Countries that do not have means for Rights Holders to directly enforce their copyright protections through ISP notification systems, and are instead forced to seek copyright enforcement action through the Courts are referred to as “Judicial Systems.”

Notice Limitations: Unfortunately, even if a country maintains a Notice and Takedown System, an ISP may still refuse to disable a website or website content upon receipt of a takedown notice from a Right Holder. In such instances, a Rights Holder may be forced to seek enforcement through that foreign country’s judicial system in order to remove such content.

Time Sensitivity: As many of the listed countries in this posting are either evaluating or in the process of implementing copyright reforms, either on a national level or through bilateral or multilateral trade agreements, there is the possibility that the following information may soon change.

Here are each country’s online copyright enforcement system:

Afghanistan

Enforcement System: Judicial System

Berne Convention Member: No

Overview and Notes: Afghanistan is not a Berne Convention or TRIPS member state, meaning that foreign works may not qualify for copyright protection under Afghan Law. However, works from the U.S. may be entitled to certain legal protections in Afghanistan under the Joint Statement of Commercial Cooperation between U.S. and Afghan governments as both governments agreed to “establish a forum for the exchange of information on commercial matters . . . including intellectual property rights protection and enforcement.” However, the Joint Statement provides no specific details on what rights U.S. Rights Holders are entitled to under Afghan law.

Overview and Notes: Cambodia is not a Berne Convention member state but is a TRIPS signatory, which requires upholding much of the Berne Convention’s protections. However, Cambodia does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Although China maintains and a Notice and Takedown System, there has been reports that many of China’s major ISPs fail to takedown hosted content upon receipt of legitimate takedown notices. For example, the International Intellectual Property Alliance (IIPA) has criticized Baidu for its 42% takedown rate.

-The Rights Holder’s name, address and contact information;
-The title(s) and website address(es) of the infringing content which is requested to be removed or disconnected;
-Preliminary evidence of the work(s)’ infringement; and
-A request that the ISP remove the infringing content.

East Timor (Timor Leste)

Enforcement System: Judicial System

Berne Convention Member: No

Overview and Notes: By not being a Berne Convention or TRIPS member state, foreign works may not qualify for copyright protection under East Timorese law. Further, East Timor has not passed any specific copyright legislation since its independence in 2002.

-The Rights Holder’s name, address for service in Hong Kong, contact telephone number, and any other relevant contact information;
-Particulars of the copyright work(s) alleged to be infringed including the name or description of the copyright work(s), type of work(s), date of creation or first publication of the copyright work(s), and name of the current owner of the work;
-A statement confirming that the Rights Holder submitting the complaint is the copyright owner or authorized representative of the copyright owner;
-Identification and online location of the material and/or activity which is the subject of the alleged infringement;
-In cases of information location tools, identification of the reference or link to the material or activity in question and its location;
-Description of how the material or activity in question infringes the copyright owner’s rights in the copyright work(s);
-A statement that the submitting Rights Holder believes in good faith that use of the material, or conduct of the activity in the manner complained of is not authorized by the law of Hong Kong, the copyright owner or its authorized representative(s);
-A request that the ISP send a copy of the notice to its subscriber whose account for online services has been used or involved in the alleged infringement;
-A request that the ISP remove the allegedly infringing material, disable access to the infringing material/activity;
-A declaration that the submitting Rights Holder declares that the information contained in this notice is true and accurate to the best of his knowledge and belief;
-A declaration that the submitting Rights Holder understands that it is an offence to make any false statement in this notice (the maximum penalty of which is a fine of HK$5,000 and imprisonment of 2 years), and that he or she is also liable to pay compensation by way of damages to any person who suffers loss or damage as a result of the false statement; and
-Signature and date of the submitting Rights Holder.

India

Enforcement System: Notice and Takedown System (temporary)

Berne Convention Member: Yes

Overview and Notes: India’s notice and takedown protocols establish that allegedly infringing content will be taken down 36 hours after a Rights Holder submits a takedown notice to an ISP, and the ISP provides notice of the Rights Holder’s notice submission to the alleged infringer. If the Rights Holder’s notice is satisfactory to the ISP, the ISP will restrict access to the infringing website(s) for 21 days from the date of receipt of the Rights Holder’s notice or until the ISP receives a Court order restricting public access to the alleged infringing website(s), whichever is earlier.

It is important to note that only an owner or an exclusive licensee of a copyright-protected work may submit a notice pursuant to India’s notice and takedown protocols.

-The description of the work infringed with adequate information to identify the work;
-Details establishing that the submitting Rights Holder is the owner or exclusive licensee of copyright in the work;
-Details establishing that the copy of the work which is the subject matter of transient or incidental storage is an infringing copy of the work owned or exclusively licensed by the submitting Rights Holder and that the allegedly infringing act is not covered under section 52 or any other act that is permitted under the Copyright Act (1957);
-Details of the location where transient or incidental storage of the work is taking place;
-Details of the person, if known, who is responsible for uploading the work infringing the copyright of the submitting Rights Holder; and
-Signature and date of the submitting Rights Holder.

Indonesia

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Indonesia does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders. The Indonesian Parliament is reported to be evaluating amendments to its copyright laws that will create a Rights Holder Internet copyright notification system through the Ministry of Communications and Informatics that will evaluate alleged infringements and order that ISPs takedown infringing content. The IIPA has criticized this proposed copyright enforcement system as it does not provide injunctive relief against non-compliant ISPs, nor a repeat infringer policy, or allow Rights Holders to submit complaint notices directly to ISPs.

Overview and Notes: Japan’s notice and takedown protocols establish that allegedly infringing content will be taken down seven (7) days after a Rights Holder submit a notice to an ISP, and the ISP provides notice to the alleged infringer.

-Information and location of the particular alleged infringement;
-Suggested enforcement actions to be taken by the ISP;
-The rights in the work that are allegedly being infringed;
-The reasoning why the Rights Holder believes that an infringement has taken place; and
-The Rights Holder’s contact information.

Laos

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Laos does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Malaysia recently enacted copyright reforms that permit Rights Holders to submit infringement notices to ISPs that will remove hosted infringing content within 48 hours of notice of the alleged infringement to the ISP. However, Malaysia’s notice and takedown protocols do not providing specific notice requirements.

Overview and Notes: Maldives is not a Berne Convention member state, yet is a TRIPS signatory that requires that Maldives uphold much of the Berne Convention’s protections. Maldives does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Mongolia’s copyright legislation requires that ISPs prevent any copyright violation on websites they host and provide Right Holders the ability to enforce their rights through submitting reports to the ISPs of such violations. However, the legislation provides no specific requirements for such “reports.”

Overview and Notes: Myanmar is not a Berne Convention member state, yet is a TRIPS signatory. However, according to the World Intellectual Property Organization, Myanmar’s current copyright laws “do not prescribe copyright of other countr[ies] to be recorded in Myanmar and copyright obtained in other countries can not be enforced in [Myanmar].”

Further, Myanmar does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Taiwan’s notice and takedown protocols establish that allegedly infringing content will be taken down five days after notice is provided from a Rights Holder to an ISP, and from the ISP to the alleged infringer.

-The Rights Holder’s name, address, and telephone number (or fax number or e-mail address);
-The name(s) of the copyrighted work(s) being infringed;
-A statement requesting the removal of, or disabling of access to, the content that allegedly infringes the identified copyrighted work(s);
-Access or relevant information sufficient to enable the notified ISP to identify the allegedly infringing content;
-A statement that the Rights Holder or the agent thereof is acting in good faith and in the belief that the allegedly infringing content lacks lawful licensing or is otherwise in violation of the Copyright Act; and
-A declaration that the Rights Holder is willing to bear legal liability in the event there is misrepresentation with resultant injury to another.

Thailand

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Prior to its dissolution in December 2013, Thailand’s Parliament had evaluated copyright law reforms to enhance online copyright enforcement. However, such proposed reforms would only allow Thai Courts to issue takedown orders against ISPs hosting infringing content and provided no direct notice and takedown procedures for Rights Holders to directly petition ISPs to remove infringing content.

-Statement that the information in the notice is accurate;
-Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) that appear to have been infringed;
-The identity, address, telephone number and electronic mail address of the submitting Rights Holder;
-Statement that the submitting Rights Holder has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its agent, or the law;
-Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the submitting Rights Holder is the owner of an exclusive right that is allegedly infringed or is authorized to act on the Rights Holder’s behalf; and
-Signature of the submitting Rights Holder.

-Name and address of the submitting Rights Holder;
-Submitting Rights Holder address for service in Singapore (if a non-Singapore resident);
-Submitting Rights Holder’s telephone number, fax number and e-mail address;
-Identification of copyright material and location of allegedly infringing content;
-A statement that the information in the notice is accurate;
-A statement that the submitting Rights Holder is the owner or exclusive licensee of the copyright in the material referred to in complaint or is authorized to act on behalf of the owner or exclusive licensee of the copyright in the material referred to in the notice;
-A statement that the submitting Rights Holder requires the ISP to remove or disable access to the allegedly infringing content;
-A statement that the submitting Rights Holder or their agent, in good faith, believes that the electronic copy referred to in the notice is an infringing copy of the protected material content;
-A statement that the submitting Rights Holder is the owner, exclusive licensee, or agent thereof of the copyrighted content; and
-A statement that the submitting Rights Holder submits to the jurisdiction of the courts in Singapore for the purposes of any proceedings relating to any offense under section 193DD(1) of the Copyright Act or any liability under section 193DD(1)(b) of the Copyright Act.

Sri Lanka

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: Sri Lanka does not currently provide any legal incentives or procedures for ISPs to remove hosted infringing content upon notice from Rights Holders.

Overview and Notes: Although Vietnam recently considered Internet liability reforms as detailed in the proposed Stipulations on the Responsibilities for Intermediary Service Providers in the Protection of Copyright and Related Rights on the Internet and Telecommunications Networks (Joint Circular No. 07/2012/TTLT-BTTTT-BVHTTDL), such reforms have yet to be enacted and do not contain any specific notice and takedown provisions. However, Vietnam may adopt notice and takedown procedures in the future if the U.S.’ draft IPR provisions of the TPP are adopted.

On February 8th, the IIPA submitted their 2014 Special 301 Report Submission to the USTR. As one of the largest U.S. lobbying groups for the copyright-based industries, the IIPA’s submission identifies the foreign countries the IIPA believes provides the most ineffective IP legal protections for U.S. businesses. The USTR’s final Special 301 Report (released annually April-May) provides reporting to the U.S. government and the general public on the countries that, according to the Omnibus Trade and Competitiveness Act (19 U.S.C. § 2242(a)), deny “adequate and effective protection of [IP] rights” or “fair and equitable market access to United States persons that rely upon [IP] protection.”

Although the U.S. government rarely imposes trade sanctions based on the Special 301 Report, a country’s listing in the final report often impacts the U.S.’ trade relations with that country and the degree to which the U.S. government initiates trade promotional activities with the same. From both a private sector and practical standpoint, the Report also represents a review of the markets that U.S. businesses have had the most IP protection challenges.

What countries did the IIPA recommend for inclusion in the 2014 Special 301 Report?

Priority Foreign Countries. For a second year in a row, the IIPA has identified Ukraine as being a “Priority Foreign Country.” This is the least favorable designation available under the Special 301 reporting system. Specifically, it identifies that country as one with the “most onerous or egregious acts, policies, or practices” that “have the greatest adverse impact (actual or potential) on the relevant [U.S.] products” without making efforts to ameliorate their status. 19 U.S.C. § 2242(b)(1)). Ukraine’s designation as a Priority Foreign Country was based on a number of factors, most notably the absence of effective online copyright enforcement, and unfair and non-transparent royalty society collections. Shockingly, the classification was also based on reports of widespread software pirating by Ukrainian government agencies.

Newly Non-Listed Countries. It is also important to note that the IIPA has recommended removing a number of countries from the final 2014 Special 301 Report due to their improvements in IP protection. These countries include Barbados, Bolivia, Colombia, Dominican Republic, Egypt, Finland, Guatemala, Jamaica, Lebanon, Pakistan, Paraguay, Peru, Trinidad and Tobago, and Venezuela.

What’s The Takeaway? Every foreign market has its own IP protection challenges. U.S. businesses that are exploring expansion into new markets should consider the IIPA’s Special 301 Report Submission (as well as the USTR’s Final Special 301 Report due out later this year), and the USTR’s Out-of-Cycle Review of Notorious Markets to help evaluate the IP risks associated with such markets. Doing so can help to ensure that such businesses can better protect their IP assets as they expand.

Late last month, the European Commission approved for publication (pre-registration) a geographical indication (GI) application for the Danish cheese HAVARTI. This raised concern amongst interested industry groups, and should cause concern amongst all export-focused businesses. Similar to trademarks, and particularly certification marks, GIs are legal protection granting producers of a particular type of product from a specific geographical region the exclusive right to use the geographical region’s name (or a regionally-known name) on their products and in related promotions. Being an exclusive right, GIs exclude producers from other regions from labeling and marketing similar or identical products under the same GI name. This means, for example, that a U.S. sparkling wine can never be sold as CHAMPAGNE in the EU, or a Kenyan tea as DARJEELING in India. If registered, the EU HAVARTI GI would exclude non-Danish cheese producers from labeling and promoting their Havarti cheeses in the EU as HAVARTI.

So what’s concerning about the potential EU HAVARTI GI registration for non-dairy businesses? Well, industry groups such as the Consortium for Common Food Names (CCFN) argue that allowing the EU HAVARTI GI application to be registered would contravene international standards by prohibiting non-Danish cheese producers from labeling and promoting their own Havarti cheeses in the EU as HAVARTI, even if they meet recognized international Havarti cheese production standards. From an intellectual property perspective, the registration would arguably expand EU GI protections to common (generic) named products. Commonly named GIs such as DIJON for mustard and CHEDDAR for cheese have traditionally been restricted from GI protection due to their common vernacular usage. HAVARTI is a widely known cheese variety this is arguably as generic as these other excluded food names. By allowing HARVARTI’s potential GI registration, the European Commission could possibly allow other generic named products to be registered as GIs, thereby hindering the promotional efforts, and ultimately success of many foreign goods in the EU.

Although the potential HAVARTI EU GI registration only directly impacts the global dairy industry and the EU market, it does underscore general issues all export-focused businesses should be aware of concerning GIs. Many businesses are unfamiliar with GIs, much less the extent to which GIs can impact their expansion and success in new foreign markets. GIs are granted legal protections in multiple countries for a wide array of goods, and can significantly impact a business’ foreign operations.

Below are some GI issues businesses should consider when entering new foreign markets:

Know the Practical Differences Between GIs and Trademarks. Before understanding what GIs restrictions a business may face in a foreign market, a business needs to recognize how GIs and trademarks differ. Unlike trademarks, GIs do not indicate or represent a individual business or their goods and services. They instead represent protections for the local conditions—natural or human-made (depending on the country)—that give products from a region their qualities and reputation. Based on these localized and natural characteristics, GIs cannot be extended, shared, or transferred to producers outside the region, and cannot be cancelled once registered. Further, in many countries that grant GIs legal protection such as the EU, member state governments, not individual producers or businesses, prosecute GI infringement claims. This means a foreign business can be assured that their unauthorized use of a registered GI in a foreign market will more likely subject them to a greater risk of legal action in that country compared to the threat of a lawsuit from a individual trademark owner.

The bottom line is that GIs prohibit exporting businesses from promoting and selling their goods in a particular country under a registered GI without much recourse.

Determine if an Export Market Recognize GIs—and to What Degree. After understanding the important differences between GIs and trademarks, businesses need to then evaluate whether the markets they wish to export to have GI protections and the extent of such protections. Nearly all countries recognize GIs for wines and alcoholic beverages through their World Trade Organization (WTO) commitments. Under Articles 22 and 23 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO member states are required to extend specific GI protections for wines and alcoholic beverages, and to a reduced degree other agricultural and natural products. Most common law jurisdictions (U.S., Australia, and Japan, etc.) generally only extend GI protections to wines and alcohol beverages based on their WTO commitments. Yet, many countries, including several substantial markets, have gone beyond TRIPS’ minimum standards by providing enhanced GI protections to non-wine and alcohol agricultural products, and even non-agricultural products. The EU, China, India, and Russia, among others, extend the same level of legal protection to all agricultural and natural product GIs. Brazil, China, India, Russia, and Switzerland even extend GI protections to human made goods such as handcrafts and textiles.

Determine if There are Existing GI Registrations for Your Goods. Once a business determines whether the market(s) they wish to export their goods possess GI protections, they must evaluate whether the names of the goods they wish to use on their goods and related promotions are registered GIs. To do so, businesses must examine national GI registers in such export market(s).

Below are GI registers for some of the world’s major GI jurisdictions.

What’s the Takeaway? As the nature of GI protections are evolving in many of the world’s major markets such as the EU, businesses need to be even more aware of GIs and how they impact their operations in foreign markets. Due to the significant implications GIs have on the labeling and marketing of exported goods, businesses should work with qualified counsel to ensure that they comply with existing GI registrations to ultimately take advantage of foreign markets opportunities.

Earlier this month, I received a message from WordPress notifying me of the one year anniversary of The IP Exporter. As blogging on cross-border and trade-related IP issues over the past year has had results that I never imagined, I thought I would take this opportunity to take a look back at some of my impressions over the past year.

The outpouring of support and feedback I have received from other legal practitioners and those with an interest in the ever-changing world of cross-border IP protection has been the most remarkable aspect of blogging for The IP Exporter. Attorneys and IP specialists from all over the world have not only read my blog (which is a shock in itself!) and shared it with friends and colleagues, but they actually commented on it and told me that it helped in their research and the actual legal issues they were facing. As a relatively young attorney, I have been heartened by this positive feedback. Also, such communication has led to a number of guest writing and professional legal opportunities that I would not have had without blogging.

Lastly, the ability to connect with people throughout the world has made blogging an amazing experience. I never thought people from so many different countries would read The IP Exporter. To date, readers from over 90 countries have read The IP Exporter, and much of my readership comes from places I never expected, such as India, Malaysia and Russia. I am also continually amazed about what I blog or tweet about, much of which takes place in countries on the other side of the globe, have resulted in direct feedback from those in such countries. For instance, when I tweeted in July this year about a story on how a hair salon in Dubai, United Arab Emirates was using promotional materials that were alleged to be confusingly similar to Facebook’s protected branding, I received the above photo soon thereafter by a local resident who found it on his car. Although, it is not a complete surprise that I would receive such feedback in this globalized age, I still find it remarkable.

What’s The Takeaway? Blogging over the past year has been an amazing experience. It has made me grow as a writer and as a legal practitioner. More than personal and professional growth, it has made me realize how large a need there is for people to know more about cross-border and trade-related IP issues. The culmination of these experiences has energized me and my efforts to blog on these topics.

You may have thought that this summer was all about capturing that certain bohemian-chic essence, but the true trendsetters are all talking about recent developments in Indian patent law. In April, the Indian Supreme Court ruled in Novartis AG v. Union of India & Othersthat Swiss pharmaceutical maker Novartis was not entitled to patent protections for their leukemia treatment drug Gleevec. The Indian Supreme Court’s rationale was heavily based on their efforts to stop pharmaceutical “evergreening” – a practice pharmaceutical companies use to extend the life of a patent by seeking patent protection of subsequent improvements to their drugs or alternative, novel uses for such drugs.

Novartis had been attempting to patent a new and improved version of Gleevec. It had been unable to patent the original version of the drug in India because India did not recognize or grant pharmaceutical patents prior to completing their implementation of their World Trade Organization obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005. Upon discovering an improved version of Gleevec, Novartis sought to gain patent protection in an effort to halt the rampant manufacturing of generic forms of the drug in India. However, the Indian Supreme Court found that Novartis had not created enough of an improvement in the new Gleevec to qualify the drug as a new invention. Since Novartis’ ruling, Indian courts have subsequently invalidated other similar patent applications as seen last Friday with the invalidation of the Glaxo Smith Kline’s cancer drug Tykerb.

Well, “fear not!” Keep in mind that Novartis and the other related Indian court decisions only apply to pharmaceutical patents as such rulings have been based on a specific provision in the Indian Patent Act relating to incremental innovations in pharmaceuticals. So, given the limited applicability of Novartis and related cases, foreign businesses should simply forge ahead with their Indian business relationships, right?

Not quite so fast. Dealing with any foreign business, inventor, or entity comes with its own challenges and those looking to partner with Indian resident businesses should consider the following before getting too involved.

1. Get a Comprehensive Agreement in Place Beforehand. Many partnering businesses have a difficult time putting a written agreement together prior to beginning their business relationship. THIS. IS. A. MISTAKE. Getting a clear agreement in place beforehand is important for foreign businesses and their Indian counterparts to prevent future misunderstandings that could potentially derail their objectives and result in substantial costs. Such an agreement should not only clearly outline the parties’ rights and obligations with respect to the Intellectual Property (IP) created in their relationship, it should additionally cover business aspects of the relationship. Although a large part of such relationships is based on the IP, the business side encompasses what happens once IP is created and it is equally important.

Specifically, agreements should address the following:

What is being protected? The agreement should clarify for foreign businesses and their Indian counterparts the types of IP their relationship needs to protect. This can be as simple as designating that both patentable and trade secret innovations will be protected and as complicated as describing protections for each and every potential innovation arising out of the relationship, whether a part of the parties’ original intentions or not. This designation process will not only help to define the scope of the parties’ project, it will also help ensure that the parties seek appropriate protections and enforcement measure for their IP. Completing this exercise is especially important in a cross-border context as the enforcement of IP rights abroad may be more difficult than simply making sure everyone is on the same page from the beginning. India in particular has been notorious for lacking the necessary infrastructure to enforce IP rights efficiently.

Who gets ownership? Establishing ownership of resulting IP from an Indian business relationship is important in an initial agreement because countries vary in the rights they give to owners and inventors. For example, Section 2(p) of the Indian Patent Act uses the term “patentee” for patent owners that is defined as “the person for the time being entered on the register as the grantee or proprietor of the patent.” In contrast, the U.S. does not officially use the term “patentee” and most American inventors would probably assume that patentee refers specifically to inventors. As illustrated above however, “patentee” in India is not necessarily limited to inventors. Therefore, making sure that all parties are clear on who will be named inventors and who will own resulting IP is essential to ensuring a good business relationship with an Indian resident business or inventor.

Who gets paid? This, inevitably, is a difficult topic to discuss, and it is inextricably tied to IP ownership rights. When there is no money coming in, everyone wants to split things down the middle. However, once there is money or it looks like there will be no money, businesses start to quibble. In order to avoid costly, drawn out battles that could prevent businesses from furthering an otherwise fruitful relationship, it is important to outline how all parties are to be compensated for their hard work, time and ingenuity once their relationship has taken off as well as when it has reached its conclusion.

Outlining business plans in writing through an agreement not only forces the parties to talk about their innovation strategy, marketing plans, and production plans; it also enables them to have a clearer direction for their relationship. If anyone is worried that creating a detailed, written plan will inhibit their creativity, then remember that a good agreement should leave some room for flexibility. Allowing such flexibility can lead to great innovation and profitability. Ultimately, however, having a clear outline of where the parties’ want to go, how they want to get there, and what they need to get to that point (the “what” usually being the IP) can lead to a more profitable and innovative business relationship and can prevent costly future litigation.

2. Be Conscious of Indian Patent Filing Requirements and Tolling Restrictions. Understanding Indian patent application filing requirements and the interplay between them and other foreign patent filing requirements is essential for businesses to ensure the broadest global patent protections for their resulting innovations. The most important thing for non-Indian businesses to realize is that Section 39 of the Indian Patent Act requires that patent applications for any invention created with the help of Indian residents must first be filed in India. Yes, before filing an international application under the Patent Cooperation Treaty, before filing a U.S. patent application with the United States Patent and Trademark Office (USPTO), and before filing a patent application anywhere else, foreign businesses working with Indian inventors must file a patent application with India’s patent office (The Controller General of Patents, Designs, and Trademarks (Controller)).

Does that sound unreasonable? Foreign businesses may be able to apply for special permission from the Controller to initially file abroad, but don’t bet on the Controller bending the rules. If no special permission is given, a foreign business must wait for approximately six weeks after filing in India to file elsewhere.

So, if a foreign business has applied with the Controller and waited six weeks, they can now submit applications anywhere else…right? Sure! Just make sure not to dilly-dally because filing in India limits the amount of time a business has to file their patent application with the USPTO and other national patent offices. Knowing the timelines from start to finish of the Indian patent application system and how filing dates in India affect the requirements for filing applications in other countries can greatly impact business decisions.

Parting Thoughts. Go forth and innovate with Indian resident compatriots! The considerations above and recent Indian pharmaceutical patent decisions should not stop foreign businesses from doing so. Collaboration enables people to create great innovations, but every business relationship, whether down the hallway or across the world, has its own challenges and limitations. It’s good for businesses to be honest about those challenges and to create a plan for overcoming them before they run into them. These general suggestions don’t apply to everyone and it’s always wise to consult with qualified local counsel and persons who can advise on the particulars of a specific business. In the end, it will save businesses a lot of time, headaches, and money to simply invest in the relationship by setting it up correctly.

Also, no matter how overwhelming the planning process may seem, just remember, at least you’re not going up against Bollywood screenwriters who generously “borrow” from American film. In cases like those, it’s best to pop some popcorn, settle onto the couch, and enjoy the results – because the results ARE rather glorious, are they not?

Trade secrets are arguably the most common form of intellectual property transmitted across borders in today’s global market. Any business that seeks to capitalize on foreign market opportunities—either by working with a foreign partner or establishing their own foreign operations—is likely to transmit confidential information abroad. However, such cross-border transmissions directly impact the legal protections afforded to such information as the extent of trade secret protection and enforceability of trade secret rights varies between countries. Examining some of the main differences in trade secret protection and enforceability between countries is important as businesses increasingly must choose how to contractually structure protections for their confidential information abroad. Further, understanding the extent of trade secret protections afforded to confidential information in different markets can help businesses establish effective country-specific trade secret protection strategies that address the strengths and weaknesses of a particular country’s legal protections for trade secrets.Particular factors that should be considered include:

Qualifying confidential information

Injunctive enforceability of trade secret rights

Foreign judicial system effectiveness

Qualifying Confidential Information. A preliminary factor for businesses to consider is the extent to which their confidential information is protected under a country’s trade secret laws. Most countries have adopted a minimum level of legal protections for trade secrets, yet such protections often vary. World Trade Organization (WTO) member states are required to adopt minimum legal protections for trade secrets. Under Article 3 and Article 39(2) of The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), WTO member states must provide persons or entities of their countries and other WTO member states legal rights to prevent the disclosure of lawfully-held information that:

Is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

Has commercial value because it is secret; and

Has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

As this widely accepted minimum legal requirement is ambiguous, WTO member states have the ability to establish their own variation, often differing the amount and type of confidential information qualifying for trade secret protection. For example, the U.S.[1] and China[2] provide legal protection for confidential information that has actual (current) or potential commercial value, where TRIPS is silent about the time to which such value must be established.[3] This means that a business that has developed or acquired confidential information that will be commercially valuable at a future date will qualify for legal protection for such information in these countries, subject to protection and secretive requirements.

In contrast, several countries are silent on this commercial value issue and maintain other factors for determining trade secret protection. For example, in India, trade secrets have been judicially defined as “formulae, technical know-how or a peculiar mode or method of business adopted by an employer which is unknown to others.”[4] Not only is this definition silent on when commercial value must be established, it is also silent on what constitutes sufficiently reasonable protection procedures for such information to qualify for trade secret protection.

As these examples illustrate, countries often maintain different qualifying standards for trade secret protection despite satisfying their TRIPS obligations. Based on these differences, businesses must carefully determine what portions of their confidential information qualifies for trade secret protection in a particular country.

Injunctive Enforceability of Trade Secret Rights. Trade secret owners must also consider their ability to protect their trade secrets through injunctive relief in a particular country. Most countries will grant a permanent injunction against a person or entity after they are found by a Court to have misappropriated a trade secret. However, this often requires initiating and succeeding in a legal action, which is not certain to succeed and may take a substantial amount time before being granted. This could harm the commercial value of the confidential information, and in many cases, the potential success of the trade secret owner’s foreign business operations or strategies. As a result, seeking a preliminary injunction, namely an injunction sought at the onset of a trade secret misappropriation proceeding, is essential to effective trade secret protection.

A business’ ability to seek a preliminary injunction to protect their trade secret varies from country-to-country. In the U.S., a trade secret owner may seek a preliminary injunction against a misappropriating party or parties providing them assistance through an initial motion in a misappropriation proceeding.[5] Although U.S. jurisdictions generally maintain high evidentiary burdens for trade secret owners to obtain preliminary injunctions[6], U.S. courts allow evidentiary exchanges between the parties (known as discovery) and copies of original evidence to be admissible under specific requirements. U.S. courts may also permit discovery proceedings to be expedited based on the sensitivity of the confidential information at issue.[7]

In contrast, other countries make obtaining a preliminary injunction more difficult. For example, preliminary injunctions are rarely granted in Chinese trade secret cases due to the absence of a discovery process and restrictive evidentiary burdens. Chinese trade secret proceedings do not have discovery processes and Chinese Courts will generally only accept original written forms of evidence.[8] This means that trade secret owners in China are forced to gather their own evidence, and can only admit original written evidence, which makes satisfying the evidentiary burden to obtain an preliminary injunction substantially more difficult.

As illustrated with China’s trade secret injunction procedures, trade secret owners need to determine what challenges they will face in enforcing their trade secret protections under a country’s judicial procedures, regardless of the extent of a country’s trade secret protections.

Foreign Judicial System Effectiveness. Even if a country’s injunctive judicial procedures are surmountable, a country must also have an effective judicial system to even allow injunctive enforcement to be brought forward. This requires determining whether a country has an effective judicial system to enforce trade secret protections. There are several resources for businesses to determine the effectiveness of a foreign country’s judicial system, including their national IP offices and trade agencies. In the U.S., the Office of the U.S. Trade Representative (USTR) publishes annual reports (known as Special 301 Reports) that identify IP enforcement concerns for U.S. IP owners by country, including ineffective judicial systems. For example, in the 2013 USTR Special 301 Report, the USTR identified Argentina, Bulgaria, Greece, Guatemala, India, Indonesia, Paraguay, Peru and Turkey as having judicial system inefficiencies for enforcing IP rights.

Parting Notes. Although the above-mentioned factors are important when evaluating cross-border trade secret protections, examining such factors only comprise a portion of an effective foreign trade secret protection strategy. Establishing the best protections for trade secrets abroad should also include other protection measures including the development of internal business protocols to prevent unauthorized information disclosures, among other procedures. Working with qualified counsel can effectively assist with evaluating both the above-mentioned factors and internal business protocols.

In recent years, many national customs offices have established notification procedures to allow IP rights holders the ability to alert customs officials of their IP rights in order to assist them in their import inspection activities. Like Internet Service Provider takedown requests on the Internet (more information about these procedures), IP customs office notifications is a tool for IP rights holders to protect their IP rights abroad by reducing the global spread of infringing goods and content by preventing its cross-border transit—and in many cases, assisting in its destruction. However, to utilize such protection measures, an IP rights holder must ask themselves:

Can you submit such a notification in a particular country?

Does the country you wish to enforce your IP rights have an IP customs notification system?

Does such a country’s national IP customs notification system include the type of IP you wish to protect?

What are the particular foreign customs agency’s IP notification requirements?

Can you submit a IP customs notification? Generally, an IP rights holder can only submit an IP customs notification to a foreign customs office if their IP qualifies for protection in that foreign country. Determining if particular IP qualifies for protection in a country depends on the type of IP the rights holder wishes to protect and to what extent the rights holder has secured foreign legal protections. Here is how it breaks down:

Trademarks. If an IP rights holder wants to submit a foreign customs notification to protect a trademark or service mark in another country, they usually need to have registered that mark in the IP office of that specific country or through a centralized international registration mechanism like the Madrid Protocol (more information about the Madrid Protocol). This is because trademark protection is territorial, meaning that a trademark or service mark registration only grants its owner rights in the mark in the territory of the registering country. So for example, if a U.S. company registers its trademark in the U.S. for particular goods or services and wishes to protect that trademark against infringing imports into New Zealand, it must also register that mark through the Intellectual Property Office of New Zealand or the Madrid Protocol in order to submit a trademark notification to the New Zealand Customs Service.

Of course there are some important exceptions to this territoriality requirement to keep in mind. The European Union maintains a community-wide trademark system (Community Trade Mark) allowing one community registration to qualify for customs notification registration in all EU member states (a list of EU member states is available here). The African Intellectual Property Organization (OAPI) also maintains a community trademark system where a single OAPI community mark registration is recognized in 16 African nations (a list of EU member states is available here).

Patents. Like trademarks, a patent rights holder must generally have a registered patent in the country to which they wish to register an IP customs notification. Unlike trademarks, however, there are no current community registration exceptions. As a result, patent rights holders must register their patents in the country to which they wish to register their IP customs notifications.

Trade Secrets: Generally, as trade secrets require that their owners keep the content of their secrets confidential in order to maintain its legal protections, any disclosure of such secrets to customs officials likely eliminates such secrets’ protections. Therefore, there does not appear to be any national customs IP notification systems that permit trade secret notification.

Copyright. Unlike trademarks and patents, a work qualifying for copyright protection in one country may qualify for copyright protection in other countries in order to allow foreign customs notification registration. However, depending on the country, foreign copyright authors may need to file a copyright registration in order to submit an IP customs notification. A work qualifies for international copyright protection under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) when it becomes attached. Attachment requires that the author of the work be a national of a Berne Convention country (Berne Convention countries), the author is a habitual resident of a Berne Convention country, that the work is first published in a Berne Convention country, or that the work is published in a Berne Convention country within 30 days after an initial publishing in a non-Berne Convention country. If a work is attached through any of these means, it is treated as if the work originated in each Berne Convention country, and is then subject to each Berne Convention country’s copyright protection requirements in order to qualify for copyright protection in that specific country.

If a work qualifies as an attached work under the Berne Convention and the IP rights holder wishes to register their protected work in a foreign Berne Convention country customs office, they will be able to file a customs registration without having authored the work in the foreign Berne Convention country. Yet, as mentioned above, countries differ on national copyright registration requirements for IP customs notifications. Australia, for example, does not require Australian copyright registration prior to submitting a customs notification application to the Australian Customs Service. However, several major markets, such as the U.S., China and India, require that copyrighted works be registered in their country prior to registering an IP customs notification.

Does the country you wish to enforce your IP rights have an IP customs notification system? Not all countries maintain IP customs notification processes. Some substantial and growing markets, such as Brazil, Canada and Chile, do not currently maintain IP custom notification systems. However, many major markets and transshipment countries maintain various types of IP customs notification systems including Argentina, Australia, China, European Union (EU), Hong Kong, India, Japan, Malaysia, Mexico, New Zealand, Russia, Singapore, South Korea, Taiwan, Thailand, Turkey, Ukraine, United States and Vietnam, among others.

Does such a country’s national IP customs notification system include the type of IP you wish to protect? Several countries only maintain IP notification systems for particular types of IP. For example, The U.S. Customs and Border Protection (CBP) only accepts copyright and trademark notifications, not patent notifications (the CBP only examines imports for patent infringement based on a Section 337 exclusion order from the U.S. International Trade Commission (more information available here)). In contrast, several other countries monitor and detain imports for possible patent and geographical indication infringement. India’s Central Board of Excise and Customs (CBEC) in particular monitors imports for copyright, geographical indication, patent and trademark infringement.

What are the particular foreign customs agency’s IP notification requirements? Once an IP rights holder verifies that their IP qualifies for legal protections in the foreign country they wish to submit an IP customs notification, and that the type of IP they wish to notify customs about can be registered, the IP rights holder’s customs notification must comply with the foreign customs office’s own notification requirements.

Below are the IP customs notification submission requirements for some of the worlds’ major markets.

General Notes: Australian IP customs notifications are known as Notices of Objection.To register a copyright or trademark notice with Australian Customs Service, an IP rights holder must submit: (1) a notice of objection form; and (2) a deed of undertaking. Both types of forms as well as further instructions are located in the right column.

The EU refers to IP customs notifications as Applications For Action. Applications require: (1) a completed application form; and (2) a completed Article 6 Declaration. Both forms are located to the right.

Note: Individual EU member states may maintain their own IP customs notification systems (a link to individual EU member state customs agencies is available here).

**Note**: The above requirements are meant for comparative educational purposes only. IP rights holders should consult with national customs agencies or qualified attorneys in the jurisdictions they wish to enforce their rights to confirm these and other IP customs notification requirements.

Further Steps. Once an IP rights holder’s IP is registered with a foreign customs office, the foreign customs office will generally notify the rights holder or their representative of any infringing inbound shipments and may detain and potentially destroy infringing imports. However, such detentions may include legal proceedings, as well as additional country-specific enforcement procedures. IP rights holders should obtain qualified local counsel to assist with these enforcement activities.

How Does the Madrid Protocol Work? The Madrid Protocol allows trademark owners to file an international trademark application based on a national trademark registration in a Madrid Protocol country (known as the “basic application” or “basic registration”) to obtain trademark protection in other Madrid Protocol countries. Once filed, an international application is submitted to the International Bureau at the World Intellectual Property Organization (WIPO) and evaluated based on international requirements. If approved, the trademark is registered for protection in countries designated in the international application (subject to such countries’ potential opposition). Once successfully registered, the trademark is treated as if it were filed in each of the foreign countries identified in the international application, subject to specific restrictions.

Central Attack. Determining whether an international registration is subject to central attack is the most crucial issue in determining whether to consider filing a trademark in India under the Madrid Protocol or directly with the CGPDTM.Central attack occurs when a basic application or its resulting registration of a mark is withdrawn, lapsed or renounced within five years of the international registration of the mark under the Madrid Protocol. When this occurs, all Madrid Protocol international trademark registrations filed under the basic application are invalidated. However, after this five year period, a trademark owner’s Madrid Protocol international registration becomes independent of its basic application. This allows a trademark to qualify for national registration in the foreign countries identified in the international registration regardless of its invalidation in its native Madrid Protocol country.

Based on these circumstances, a trademark owner who can ensure that their mark’s basic application or resulting registration will not be invalidated within five years after international registration under the Madrid Protocol may find registering their mark in India under the Madrid Protocol more advantageous. However, if a trademark owner knows that their basic application or resulting registration will likely face potential invalidation within five years of filing a Madrid Protocol international registration in India, a direct filing with the CGPDTM would likely be a more prudent choice.

**Important Note**: A trademark owner whose basic application or resulting registration is subject to potential central attack in their home country may seek national registration in another Madrid Protocol country as their basic application, and then file a international registration in India through the Madrid Protocol. This can be done if the owner has enough presence in that Madrid Protocol country to qualify as a “real and effective industrial or commercial establishment.”

As it is difficult to determine the threat of central attack or if a trademark owner can register their mark in a foreign Madrid Protocol member state, obtaining qualified counsel to assess such issues is always suggested.

Registration Costs. If costs are a trademark owner’s main concerns, the Madrid Protocol provides upfront cost savings. Yet, additional expenses may arise if an international registration is opposed. Although varying based on currency rates, legal fees and the number of registration classes, registering a trademark in India through the CGPDTM costs roughly between US$300.00-$500.00. In comparison, filing an international application under the Madrid Protocol can be substantially less. For example, a Madrid Protocol filing fee in the U.S. is US$100.00-$150.00 per class (excluding fees for the basic application and associated legal costs).

However, as Madrid Protocol registrations are subject to opposition from national trademark offices, a trademark owner’s Madrid Protocol registration that becomes subject to opposition by the CGPDTM may have to spend additional funds to overcome such an opposition. Under Article 5(1) of the Madrid Protocol, any Madrid Protocol member state trademark office may object to a Madrid Protocol international registration based on international criteria provided in Paris Convention for the Protection of Industrial Property. Defending against such an opposition may negate any cost savings obtained from a Madrid Protocol registration as a trademark owner would likely have to hire counsel to assist with such a defense. Although registering the same mark under a direct CGPDTM filing may also subject its owner to a CGPDTM action, working with qualified Indian counsel in registering a trademark directly with the CGPDTM may help to mitigate the risk of such an action, or at least provide immediate and knowledgeable assistance in the defense of a potential CGPDTM action.

Assignments and Amendments. Determining whether the Madrid Protocol should be utilized to register a mark in India also depends if the trademark owner intends to amend or assign the mark’s international registration. Article 9 of the Madrid Protocol only permits a Madrid Protocol international registration to be assigned to a person or entity who is a national, domiciled, or has a substantial business presence in a Madrid Protocol member state. This potentially limits the economic desirability of a Madrid Protocol international registration as it prohibits its assignability. For example, Canada and Brazil, two major world economies, are currently not Madrid Protocol members, meaning that their citizens or businesses may not likely become assignees to an Indian Madrid Protocol registration. If a trademark owner knows that they are likely to quickly assign their Madrid Protocol registration in India after registration, as a part of a sale of a business or otherwise, such foreign assignment restrictions should be considered when choosing how to register their mark.

Additionally, the Madrid Protocol restricts amendments to international registrations. An international trademark application filed under the Madrid Protocol cannot be amended once it is submitted for examination to the International Bureau at WIPO. These restrictions appear to run contrary to rights provided under Indian trademark law. Under Article 22 of India’s Trade Marks Act, the CGPDTM Registrar may allow a trademark application, either before or after registration, to be amended under “just” circumstances. If a trademark owner knows or believes that they will likely need to amend their Indian trademark application or registration, they should consider a direct registration with the CGPDTM over a Madrid Protocol registration because a direct registration will allow greater registration flexibility.

Parting Issues to Consider Regardless of Registration. Regardless of which Indian trademark registration process a trademark owners chooses, enforcing trademark protections in India remains challenging. In the 2013 Special 301 Report by the Office of the U.S. Trade Representative, India was identified as having judicial inefficiencies and insufficient criminal enforcement against IP infringers. These problems can make any type of trademark enforcement efforts in India difficult. Based on these concerns, trademark owners should work with qualified local counsel to ensure effective enforcement of their marks in India.

The Office of the U.S. Trade Representative (USTR) released an Out-of-Cycle Review of Notorious Markets on Thursday, December 13, 2012, which identified physical and online markets reported by U.S. businesses and industry organizations as being engaged in substantial intellectual property piracy and counterfeiting. The Review included particular social media, multi-platform, deeplinking, cyberlocker, business-to-business, business-to-consumer, bit torrent indexing, bit torrent tracking, and pay-per-download websites. Specific physical markets in Argentina, China, Colombia, Ecuador, India, Indonesia, Mexico, Pakistan, Paraguay, Thailand, and Ukraine were also deemed notorious.

Other notable changes in the Review included the removal of Chinese websites Taobao and Sogou as notorious markets, for their efforts to work with rights-holders to identify infringing content on their websites.